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Introduction

In the world of food and hospitality, names often carry more than just identity, they embody tradition, reputation, and trust. The Delhi High Court’s decision in M/S Karim Hotels Pvt. Ltd. v. Mohammad Talha [FAO (COMM) 82/2025], delivered on 6 November 2025, is a striking example of how courts protect such legacies while balancing fairness for smaller businesses. The dispute revolved around the use of the name “GULSHAN-E-KARIM” by a restaurant in Moradabad, which Karim Hotels claimed infringed its registered marks “KARIM” and “KAREEM.”

The Court acknowledged that a prima facie case of infringement existed but chose not to impose an absolute ban. Instead, it permitted the Appellant to continue using the name, provided a bold disclaimer was displayed to avoid consumer confusion. This judgment highlights how trademark law safeguards established rights while ensuring proportionality in remedies.

Facts of the Case

Karim Hotels Pvt. Ltd. traces its roots back to 1913, when Haji Karimuddin, descended from royal cooks of the Mughal emperors, opened the first Karim restaurant in Old Delhi. Over the decades, the name “KARIM” became synonymous with Mughlai cuisine, and the company secured 48 registrations for word and device marks, including “KARIM,” “KARIM’S,” and “KAREEM,” across multiple classes under the Trade Marks Act, 1999.

In December 2020, the company discovered that Mohammad Talha was operating a restaurant in Moradabad under the name “GULSHAN-E-KARIM.” Believing this to be deceptively similar, Karim Hotels filed a suit in the Commercial Court at Tis Hazari seeking a permanent injunction. On 15 January 2025, the Commercial Court granted an interim injunction, restraining the Appellant from using “KARIM” in his trademark or services. The Court reasoned that Karim Hotels had priority of user dating back to 1913, while the Appellant’s adoption in 1997 and use from 2016 was much later. It further held that “KARIM” was the dominant part of both marks, creating a likelihood of confusion. The Appellant appealed to the Delhi High Court.

Argument in Favour

Karim Hotels argued that its long-standing use of the mark since 1913 had created immense goodwill and reputation. The name “KARIM” had become a source identifier for its Mughlai cuisine. The Respondent contended that the inclusion of “KARIM” in the Appellant’s mark for identical services was deceptively similar and likely to confuse consumers. The dominant feature of its registered marks was “KARIM,” and the Appellant could not incorporate it into his trade name.

The Respondent relied on the anti-dissection rule, which requires marks to be judged by their overall impression rather than dissecting individual components. It cited Parle Products (P) Ltd. v. J.P. & Co. [(1972) 1 SCC 618], where the Supreme Court held that marks should be compared based on broad features and general impressions, not side-by-side comparisons.

Argument Against

The Appellant argued that “GULSHAN-E-KARIM” was an inherently distinctive mark coined by his father in 1997, meaning “Garden of God” in Urdu. He claimed the mark was adopted honestly and continuously used since 2016. He contended that “KARIM” is publici juris, a common expression referring to the Almighty, and therefore cannot be monopolised. He further argued that the Respondent had acquiesced by waiting 25 years to take action.

The Appellant invoked the anti-dissection rule, insisting that the marks must be compared as a whole. Extracting “KARIM” from “GULSHAN-E-KARIM” was improper. He also argued that since his restaurant operated only in Moradabad, there was no likelihood of confusion with Karim Hotels’ Delhi-based outlets.

Court’s Decision

The Delhi High Court affirmed that a prima facie case of infringement was established under Section 29(2)(b) of the Trade Marks Act, 1999, which defines infringement as the use of a mark similar to a registered trademark for identical goods or services, likely to cause confusion among the public.

The Court referred to Wander Ltd. v. Antox (India) Pvt. Ltd. [1990 Supp SCC 727], which held that appellate courts should not interfere with the discretion of lower courts unless the decision was arbitrary or perverse. It applied the principle of initial interest confusion, ruling that even momentary confusion is sufficient. If a consumer of imperfect recollection wonders whether there is an association between the outlets, infringement is established.

The Court relied on Pianotist Co.’s Application [(1906) 23 RPC 774], which emphasised the importance of the look and sound of marks. “KARIM” and “GULSHAN-E-KARIM” were found phonetically similar for identical services. It reaffirmed South India Beverages (P) Ltd. v. General Mills Marketing Inc. [2015 (61) PTC 231 (Del)] and Pernod Ricard India P Ltd. v. Karanveer Singh Chhabra [2025 SCC OnLine SC 1701], holding that “KARIM” was the dominant part of the Appellant’s mark, as consumers recall essential features.

The plea of acquiescence was rejected, with reliance on Midas Hygiene Industries (P) Ltd. v. Sudhir Bhatia [2004) 3 SCC 90], which held that delay is not a defence to infringement.

While recognising infringement, the Court found the lower court’s absolute injunction disproportionate. Since the Appellant’s use appeared innocent and based on a meaningful Urdu expression, a total name change after nine years could irreparably harm his business. The Court modified the injunction, permitting the Appellant to continue using “GULSHAN-E-KARIM” subject to a bold disclaimer in English and Hindi on all signages and advertisements, clarifying that the outlet was independent and had no connection with Karim Hotels. Failure to comply within six weeks would revive the absolute injunction.

Conclusion

The Delhi High Court’s judgment in Karim Hotels v. Mohammad Talha demonstrates how trademark law protects established rights while ensuring fairness in remedies. By affirming infringement under Section 29(2)(b) but allowing continued use with disclaimers, the Court ensured that consumers are not misled while avoiding disproportionate harm to the Appellant.

The reliance on precedents such as Parle Products, Pianotist, South India Beverages, Pernod Ricard, and Midas Hygiene show the Court’s commitment to established principles of trademark law. At the same time, the modification of the injunction reflects sensitivity to fairness and proportionality.

This case aims to ensure that while trademark owners enjoy strong statutory protection under Sections 28, 29, 31, and 135 of the Trade Marks Act, courts will also consider the broader equities of each situation. The requirement for a conspicuous disclaimer provides a practical solution: it preserves the Respondent’s brand identity while allowing the Appellant to continue his business without misleading consumers.